Mollydooker Wines Pty Ltd v A Pale Chook Pty Ltd

Mollydooker Wines Pty Ltd (the Removal Opponent) opposed an application by A Pale Chook Pty Ltd (the Removal Applicant) to remove trade mark number 1110015, known as "THE BOXER," from the Register of Trade Marks. The Removal Applicant sought the removal of the trade mark under sections 92(4)(a) and 92(4)(b) of the *Trade Marks Act 1995* (Cth) on the grounds of non-use. The matter was heard by Louise Tuohy, a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether the trade mark "THE BOXER" had remained registered for a continuous period of three years ending one month before the filing of the removal application without use in Australia, or whether the applicant for registration had no intention in good faith to use, authorise the use, or assign the trade mark for use in Australia. Given that the trade mark was filed more than five years prior to the removal application, the delegate focused on the grounds under section 92(4)(b) of the Act.

The delegate found the Removal Opponent's arguments to be more persuasive. Evidence was presented by the Removal Opponent, while the Removal Applicant filed no evidence. The delegate was satisfied that the Removal Opponent had used the trade mark in relation to shiraz wine, thereby rebutting the allegations of non-use under both sections 92(4)(a) and 92(4)(b). Regarding the partial removal application, the delegate exercised discretion not to remove the trade mark for the amended goods, finding that any restriction would serve no practical purpose. Consequently, the delegate directed that trade mark registration 1110015 remain on the Register. Costs were awarded against the Removal Applicant.